On August 6, 2024, the China National Intellectual Property Administration (CNIPA) announced the fee standards for patent term adjustment (PTA) requests. Before this announcement, all submitted requests for PTA were pending review. Since August 27, 2024, CNIPA has published five batches of decisions, granting PTA to 690 invention patents, marking the official implementation of PTA in practice. This development will allow more Chinese invention patents to benefit from protection beyond the standard 20-year term. Below is a brief overview of the PTA under China’s Patent Law.

I. Introduction of PTA

The patent term for Chinese invention patents is 20 years from the application date. During the fourth amendment to the Patent Law in 2020[1], PTA was introduced to compensate for unreasonable delays in the patent prosecution process not caused by the applicant.

Specifically, if an invention patent is granted more than four years after the application date and more than three years after the request for substantive examination, the patentee may request a PTA for unreasonable delays in the patent prosecution process, excluding those caused by the applicant. However, it remains unclear what constitutes “unreasonable delays” or how to submit a request for PTA.

II. Refinement to PTA

With the implementation of the revised Patent Law Implementation Regulations and the revised Patent Examination Guidelines[2] early this year, the PTA has been further clarified.

The revised Patent Law Implementation Regulations outline how to calculate the number of days of “unreasonable delays”. This is determined by the number of days from the point when four years have passed since the application date and three years have passed since the request for substantive examination, up to the date when the invention patent is granted, minus the days of reasonable delays and unreasonable delays caused by the applicant. Reasonable delays include:

• Delays resulting from re-examination procedures, if a patent is granted after amendments are made to the application during re-examination;
• Delays resulting from suspension of relevant procedures due to patent ownership disputes or due to preservation measures.

Unreasonable delays caused by the applicant include:

• Delays resulting from failure to respond to notifications from the CNIPA within the specified time;
• Delays resulting from requests for deferred examination;
• Delays resulting from invoking incorporation by reference for omitted elements or parts.

The revised Patent Examination Guidelines specify the procedure for submitting PTA requests. Patentees must submit their request within three months from the date the patent grant is published and pay the associated fees. However, prior to CNIPA’s fee announcement, all submitted PTA requests were pending review.

III. Announcement of PTA Fees

On August 6, 2024, CNIPA issued an announcement adjusting certain patent fees, including those for PTA requests. The PTA request fee is set at 200 RMB per patent, and if approved, an annual fee of 8,000 RMB per year is required for the extended term, with no charge for partial years.

On the same day, CNIPA also issued a notice requiring patentees who submitted PTA requests before July 26, 2024, to pay the request fee by October 26, 2024. Failure to do so will result in denial of the PTA request. Once a PTA is approved, the annual fee for the extended term must be paid in full before the patent’s 20-year term expires.

As a result, the eligibility criteria and calculation method for PTA, as well as the submission process and fee payment requirements, have all become clear.

IV. Implementation

With the publication of PTA decisions, PTA is now officially implemented in practice in China. Since August 27, 2024, CNIPA has published five batches of decisions, granting PTA to 690 invention patents, marking the official implementation of PTA in practice.

To date, approved PTA durations have ranged from a few days to a couple of years, while most spanning a few months. For example, we have secured three PTA decisions for our clients, each granting an extension of around two months. Eligible patentees are encouraged to request PTA in a timely manner.

FOOTNOTES

[1] Promulgated on October 17, 2020 and took effect on June 1, 2021.

[2] Both promulgated on December 11, 2023 and took effect on January 20, 2024.